`
`Paper No. __
`
`Filed on behalf of Petitioner by:
`
`Michael N. Rader, Reg. No. 52,146
`Gregory S. Nieberg, Reg. No. 57,063
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`(617) 646-8000 Phone
`(617) 646-8646 Fax
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________
`
`Case No. IPR2021-00612
`Patent No. 10,206,025
`_____________
`
`PETITIONER’S PRELIMINARY REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`
`
`TABLE OF CONTENTS
`
`Factor 1: Whether the Court Will Issue a Stay Is Unknown ........................... 1
`
`Factors 2 and 5: Petitioner Is Not a Defendant in the Apple Litigation, and
`an Early Trial in that Litigation Is Unlikely Anyway ..................................... 2
`
`Factor 3: There Has Been Little Litigation Investment ................................... 3
`
`Factor 4: Petitioner’s Stipulation Eliminates Overlap ..................................... 4
`
`Factor 6: Patent Owner’s Response to the Merits Is Weak ............................. 5
`
`
`
`- i -
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (Mar. 20, 2020) ............................................................ 2
`Apple Inc. v. Koss Corp.,
`IPR2021-00381, Paper 15 (July 2, 2021) ............................................................... 6
`Apple Inc. v. Seven Networks,
`IPR2020-00235, Paper 10 (July 28, 2020) ............................................................. 7
`Bose Corp. v. Koss Corp.,
`1-20-cv-12193 (D. Mass.) ...................................................................................... 1
`Bose Corp. v. Koss Corp.,
`IPR2021-00297, Paper 16 (June 3, 2021) .............................................................. 6
`Bowtech, Inc. v. MCP IP LLC,
`IPR2019-00382, Paper 12 (Aug. 6, 2019) .............................................................. 7
`Dish Network v. Broadband iTV,
`IPR2020-01267, Paper 15 (Jan. 21, 2021) ............................................................. 3
`Dolby Labs. v. Intertrust Tech.,
`IPR2020-00665, Paper 11 (Feb. 16, 2021) .........................................................3, 5
`Facebook v. Onstream Media,
`IPR2020-01525, Paper 11 (April 5, 2021) ............................................................. 2
`Google Inc. v. Parus Holdings, Inc.,
`IPR2020-00846, Paper 9 (Oct. 21, 2020) ............................................................... 6
`Google v. Uniloc 2017 LLC,
`IPR2020-00441, Paper 13 (July 17, 2020) ............................................................. 3
`In re Apple,
`21-147 (Fed. Cir.) ................................................................................................... 4
`Koss Corp. v. PEAG LLC d/b/a JLab Audio,
`3-21-cv-01177 (S.D. Cal.) ...................................................................................... 1
`
`- ii -
`
`
`
`
`
`Koss Corp. v. Plantronics, Inc.,
`4-21-cv-03854 (N.D. Cal.) ..................................................................................... 1
`Koss Corp. v. Skullcandy, Inc.,
`2-21-cv-00203 (D. Utah) ........................................................................................ 1
`
`Sand Revolution II LLC v. Continental Intermodal Group-Trucking LLC,
`IPR2019-01393, Paper 24 (June 16, 2020) (informative) ..................................2, 6
`
`
`
`- iii -
`
`
`
`
`
`LISTING OF EXHIBITS
`
`Exhibit Description
`
`1001 U.S. Patent No. 10,206,025
`
`1002
`
`Prosecution History of U.S. Patent No. 10,206,025
`
`1003 Declaration of Tim A. Williams
`
`1004 Curriculum Vitae of Tim A. Williams
`
`1005 Declaration of John G. Casali
`
`1006 Curriculum Vitae of John G. Casali
`
`1007
`
`PCT/US2009/039754
`
`1008 RESERVED
`
`1009 RESERVED
`
`1010 RESERVED
`
`1011 RESERVED
`
`1012 RESERVED
`
`1013
`
`PCT Publication No. WO2009/126614A1
`
`1014 RESERVED
`
`1015 RESERVED
`
`1016 U.S. Patent Application Publication No. 2007/0165875 (“Rezvani-875”)
`
`1017 U.S. Patent No. 6,856,690 (“Skulley”)
`
`1018 U.S. Patent Application Publication No. 2004/0142693
`
`1019 U.S. Patent No. 7,069,452 (“Hind”)
`
`- iv -
`
`
`
`
`
`1020 U.S. Patent Application Publication No. 2008/0076489
`
`1021 U.S. Patent No. 7,457,649
`
`1022 U.S. Patent Application Publication No. 2003/0223604
`
`1023 U.S. Patent Application Publication No. 2007/0253579
`
`1024 U.S. Patent No. 7,627,289
`
`1025 U.S. Patent No. 5,889,870
`
`1026 U.S. Patent Application Publication No. 2008/0031475 (“Goldstein”)
`
`1027
`
`IEEE Std. 315, Graphic Symbols for Electrical and Electronic Diagrams
`(1975) (Reaffirmed 1993)
`
`1028 U.S. Patent Application Publication No. 2006/0141950
`
`1029 U.S. Patent Application Publication No. 2006/0083331
`
`1030 U.S. Patent Application Publication No. 2007/0206776
`
`1031 U.S. Patent Application Publication No. 2005/0286466
`
`1032 RESERVED
`
`1033 U.S. Patent No. 5,761,298 (“Davis”)
`
`1034 U.S. Patent No. 5,960,094
`
`1035 U.S. Patent No. 6,295,366
`
`1036 U.S. Patent Application Publication No. 2007/0110017
`
`1037 U.S. Patent Application Publication No. 2004/0068653
`
`1038 U.S. Patent Application Publication No. 2008/0113689
`
`1039 U.S. Patent Application Publication No. 2005/0037818
`
`1040 U.S. Patent Application Publication No. 2004/0210752
`
`- v -
`
`
`
`
`
`1041 U.S. Patent Application Publication No. 2007/0149261
`
`1042 U.S. Patent No. 8,180,078
`
`1043 U.S. Patent Application Publication No. 2005/0058313
`
`1044 U.S. Patent Application Publication No. 2007/0147629
`
`1045 U.S. Patent Application Publication No. 2004/0078812
`
`1046 U.S. Patent Application Publication No. 2008/0166005
`
`1047 U.S. Patent Application Publication No. 2003/0065805
`
`1048
`
`Internet Archive of
`http://www.bose.com/controller?event=VIEW_PRODUCT_PAGE_EV
`ENT&product=headphones_audio_subcategory (Nov. 1, 2007)
`
`1049 U.S. Patent Application Publication No. 2007/0092098
`
`1050 U.S. Patent Application Publication No. 2008/0226094
`
`1051 U.S. Patent Application Publication No. 2003/0018810
`
`1052 U.S. Patent Application Publication No. 2007/0258613
`
`1053 U.S. Patent Application Publication No. 2009/0046869
`
`1054 RESERVED
`
`1055 Koss Corp. v. Bose Corp., 6:20-cv-00661-ADA (D.I. 1) (Complaint &
`Exs. A-G) (W.D. Tex. July 22, 2020)
`
`1056 RESERVED
`
`1057 Order Regarding Court Operations Under the Exigent Circumstances
`Created by the COVID-19 Pandemic (C.J. Garcia) (Mar. 13, 2020)
`
`1058
`
`Supplemental Order Regarding Court Operations Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (Apr.
`15, 2020)
`
`- vi -
`
`
`
`
`
`1059
`
`1060
`
`1061
`
`1062
`
`1063
`
`Supplemental Order Regarding Court Operations Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (May
`8, 2020)
`
`Supplemental Order Regarding Court Operations Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (June
`18, 2020)
`
`Supplemental Order Regarding Court Operations Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (July
`2, 2020)
`
`Seventh Supplemental Order Regarding Court Operations Under the
`Exigent Circumstances Created by the COVID-19 Pandemic (C.J.
`Garcia) (Aug. 6, 2020)
`
`Eighth Supplemental Order Regarding Court Operations Under the
`Exigent Circumstances Created by the COVID-19 Pandemic (C.J.
`Garcia) (Sept. 21, 2020)
`
`1064 Ninth Supplemental Order Regarding Court Operations Under the
`Exigent Circumstances Created by the COVID-19 Pandemic (C.J.
`Garcia) (Oct. 14, 2020)
`
`1065
`
`Tenth Supplemental Order Regarding Court Operations Under the
`Exigent Circumstances Created by the COVID-19 Pandemic (C.J.
`Garcia) (Nov. 18, 2020)
`
`1066 RESERVED
`
`1067 RESERVED
`
`1068 RESERVED
`
`1069 Open Patent Matters Before J. Albright (W.D. Tex.) Not on Appeal, Lex
`Machina, https://law.lexmachina.com (last checked March 3, 2021)
`
`1070 Open Patent Matters Before J. Albright (W.D. Tex.) Not on Appeal
`Filed Before July 22, 2020, Lex Machina, https://law.lexmachina.com
`(last checked March 3, 2021)
`
`- vii -
`
`
`
`
`
`1071
`
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, https://www.patentspostgrant.com/district-court-
`trial-dates-tend-to-slip-after-ptab-discretionary-denials/ (July 24, 2020)
`(last checked Dec. 1, 2020)
`
`1072 Civil Docket, Koss Corp. v. Bose Corp., 6:20-cv-00661-ADA (W.D.
`Tex.) (as of March 3, 2021)
`
`1073 Civil Docket, Koss Corp. v. PEAG LLC d/b/a JLab Audio, 6:20-cv-
`00662-ADA (W.D. Tex.) (as of March 3, 2021)
`
`1074 Civil Docket, Koss Corp. v. Plantronics, Inc., 6:20-cv-00663-ADA
`(W.D. Tex.) (as of March 3, 2021)
`
`1075 Civil Docket, Koss Corp. v. Skullcandy, Inc., 6:20-cv-00664-ADA
`(W.D. Tex.) (as of March 3, 2021)
`
`1076
`
`Skrainer, S. F., Royster, L.H., Berger, E.H., & Pearson, R. G. “Do
`Personal Radio Headsets Provide Hearing Protection,” Sound and
`Vibration, 19(5) (1985), 16-19
`
`1077 Casali, J. G. & Park, M. Y., “Attenuation performance of four hearing
`protectors under dynamic movement and different user fitting
`conditions,” Human Factors (1990)
`
`1078 U.S. Patent No. 7,564,989
`
`1079 RESERVED
`
`1080 Civil Docket, MV3 Partners LLC v. Roku, Inc., 6:18-cv-00308-ADA
`(W.D. Tex.) (as of Dec. 1, 2020)
`
`1081 U.S. Patent Application Publication No. 2007/0123171
`
`1082 Agreed Scheduling Order, Koss Corp. v. Plantronics et al., 6:20-cv-
`00663, -00664, -00665 (D.I. 28) (W.D. Tex. Nov. 30, 2020)
`
`1083 U.S. Patent No. 8,571,544
`
`1084
`
`Prosecution History of U.S. Patent No. 8,571,544
`
`- viii -
`
`
`
`
`
`1085 U.S. Patent No. 9,049,502
`
`1086
`
`Prosecution History of U.S. Patent No. 9,049,502
`
`1087 U.S. Patent No. 9,438,987
`
`1088
`
`Prosecution History of U.S. Patent No. 9,438,987
`
`1089 U.S. Patent No. 9,497,535
`
`1090
`
`Prosecution History of U.S. Patent No. 9,497,535
`
`1091 U.S. Patent No. 9,729,959
`
`1092
`
`Prosecution History of U.S. Patent No. 9,729,959
`
`1093 U.S. Patent No. 9,986,325
`
`1094
`
`Prosecution History of U.S. Patent No. 9,986,325
`
`1095 U.S. Patent No. 10,469,934
`
`1096
`
`Prosecution History of U.S. Patent No. 10,469,934
`
`1097 U.S. Patent Application Publication No. 2007/0136446 (“Rezvani-446”)
`
`1098 U.S. Patent Application Publication No. 2006/0229014 (“Harada”)
`
`1099
`
`PCT/KR2006/000922 (PCT Publication No. WO 2006/098584A1)
`(“Oh”)
`
`1100 U.S. Patent Application Publication No. 2004/0165720
`
`1101 U.S. Patent No. 7,072,686 (“Schrager”)
`
`1102 U.S. Patent Application Publication No. 2002/0160820
`
`1103 U.S. Patent Application Publication No. 2002/0197956
`
`1104 U.S. Patent Application Publication No. 2004/0133734
`
`1105 U.S. Patent Application Publication No. 2004/0204168
`
`- ix -
`
`
`
`
`
`1106 U.S. Patent Application Publication No. 2005/0073522
`
`1107 U.S. Patent Application Publication No. 2006/0052144
`
`1108 U.S. Patent Application Publication No. 2006/0163358
`
`1109 U.S. Patent Application Publication No. 2006/0217827
`
`1110 U.S. Patent Application Publication No. 2008/0016205
`
`1111 U.S. Patent Application Publication No. 2008/0133551
`
`1112 U.S. Patent Application Publication No. 2008/0298613
`
`1113 U.S. Patent No. 4,456,795
`
`1114 U.S. Patent No. 5,998,275
`
`1115 U.S. Patent No. 6,499,129
`
`1116 U.S. Patent No. 7,039,944
`
`1117 U.S. Patent No. 7,289,775
`
`1118
`
`1119
`
`Twelfth Supplemental Order Regarding Court Operations Under the
`Exigent Circumstances Created by the COVID-19 Pandemic (C.J.
`Garcia) (Jan. 7, 2021)
`
`Thirteenth Supplemental Order Regarding Court Operations Under the
`Exigent Circumstances Created by the COVID-19 Pandemic (C.J.
`Garcia) (Feb. 2, 2021)
`
`1120
`
`Proposed Scheduling Order, Koss Corp. v. Bose Corp., 6:20-cv-00661, -
`00662 (D.I. 24) (W.D. Tex. Feb. 16, 2021)
`1121 Civil Docket, Koss Corp. v. Apple Inc., 6:20-cv-00665-ADA (W.D.
`Tex.) (as of March 1, 2021)
`1122 Civil Docket, Apple Inc. v. Koss Corp., 4-20-cv-05504-JST (N.D. Cal.)
`(as of March 1, 2021)
`1123 Civil Docket, Bose Corp. v. Koss Corp., 1-20-cv-12193-RGS (D. Mass.)
`(as of March 1, 2021)
`
`- x -
`
`
`
`1125
`
`1124 Civil Docket, VLSI Tech. LLC v. Intel Corp., 1:19-cv-00977-ADA
`(W.D. Tex.) (as of March 1, 2021)
`Plaintiff Koss Corporation’s Preliminary Infringement Contentions,
`Koss Corp. v. Bose Corp., 6:20-cv-00661 (W.D. Tex.)
`1126 U.S. Patent Application Publication No. 2002/0098878
`1127 U.S. Patent No. 6,097,809
`1128 U.S. Patent Application Publication No. 2007/0167187
`1129 Complaint, Koss Corp. v. Apple Inc., 6-20-cv-00665 (W.D. Tex.)
`(filed July 23, 2020)
`1130 U.S. Patent Application Publication No. 2002/0068610
`1131 U.S. Patent Application Publication No. 2005/0201585
`1132 U.S. Patent Application Publication No. 2003/0073460
`1133 U.S. Patent Application Publication No. 2003/0100274
`1134 U.S. Patent No. 7,065,342
`1135 U.S. Patent Application Publication No. 2002/0041697
`1136 Declaration of Nathan R. Speed in Support of Motion for Admission Pro
`Hac Vice
`1137 Order Granting Motion to Dismiss, Koss Corp. v. Bose Corp., 6-20-cv-
`00661 (D.I. 55) (W.D. Tex. June 22, 2021)
`1138 Order Granting Motion to Dismiss, Koss Corp. v. Skullcandy, Inc., 6-20-
`cv-00664 (D.I. 38) (W.D. Tex. Mar. 31, 2021)
`1139 Order Granting Motion to Transfer, Koss Corp. v. Plantronics, Inc., 6-
`20-cv-00663 (D.I. 45) (W.D. Tex. May 20, 2021)
`1140 Order Granting Motion to Dismiss, Koss Corp. v. PEAG LLC d/b/a
`JLab Audio, 6-20-cv-00662 (D.I. 45) (W.D. Tex. June 22, 2021)
`
`- xi -
`
`
`
`
`
`When Bose filed its Petition, Patent Owner (“PO”) had five suits pending in
`
`the WDTX involving the ’025 Patent. Since then, four of the five suits were
`
`dismissed or transferred, including PO’s suit against Bose. Exs. 1137-1140. Those
`
`four suits are now pending in different district courts with no trial date set for any
`
`of them. See generally Koss Corp. v. Skullcandy, 2:21-cv-00203 (D. Utah); Koss
`
`Corp. v. Plantronics, 4:21-cv-03854 (N.D. Cal.); Koss Corp. v. PEAG d/b/a JLab
`
`Audio, 3:21-cv-01177 (S.D. Cal.); Bose Corp. v. Koss Corp., 1:20-cv-12193 (D.
`
`Mass.). Only PO’s suit against Apple remains in WDTX.
`
`PO’s Fintiv arguments ignore three of its original suits—Skullcandy, JLab,
`
`and Plantronics—and focus on PO’s WDTX suits against Bose and Apple. As
`
`noted above, however, the Bose suit has now been dismissed and PO’s arguments
`
`based on it have been mooted. Ex. 1137. The lone remaining suit with a scheduled
`
`trial is the Apple Litigation, and that suit—involving a party unrelated to Bose—
`
`does not warrant discretionarily denying Bose’s meritorious petition.
`
`1.
`
`Factor 1: Whether the Court Will Issue a Stay Is Unknown
`
`PO argues Factor 1 weighs in favor of discretionary denial because Bose did
`
`not represent it would seek a stay if a trial is instituted. POPR, 8-10. Bose hereby
`
`represents it will seek a stay of its non-infringement declaratory judgment action
`
`pending in the District of Massachusetts if/when Koss counterclaims for
`
`infringement and Bose asserts patent invalidity as an affirmative defense.
`
`- 1 -
`
`
`
`
`
`As for Apple, Bose has no control over whether Apple will seek a stay, but
`
`the Board has not required parties to represent they will seek a stay for Factor 1 to
`
`be neutral. Rather, following Sand Revolution II1, the Board finds Factor 1 neutral
`
`absent “specific evidence” Judge Albright will deny a stay motion. Facebook v.
`
`Onstream Media, IPR2020-01525, Paper 11, 9-10 (April 5, 2021); DISH Network
`
`v. Broadband iTV, IPR2020-01267, Paper 15, 12–14 (Jan. 21, 2021).
`
`2.
`
`Factors 2 and 5: Petitioner Is Not a Defendant in the Apple
`Litigation, and an Early Trial in that Litigation Is Unlikely Anyway
`
`PO’s Factor 2 arguments for the now-dismissed Bose Litigation are moot.
`
`As for Bose’s pending declaratory judgment action, no trial has been scheduled,
`
`which “weighs significantly against” the Board exercising its discretion to deny
`
`institution. Google v. Uniloc 2017, IPR2020-00441, Paper 13, 35 (July 17, 2020).
`
`PO’s Factor 2 arguments thus hinge on the Apple Litigation’s trial date. But
`
`Bose is not a party to the Apple Litigation, and thus whatever weight Factor 2 is
`
`given in view of Apple’s trial date should be offset by Factor 5. Dolby Labs. v.
`
`Intertrust Tech., IPR2020-00665, Paper 11, 13-14 (Feb. 16, 2021) (“Dolby”)
`
`(“Factors 2 and 5 are interrelated” where the challenged patent is involved in
`
`different actions with different parties and different trial dates.). As Fintiv made
`
`clear: “If a petitioner,” like Bose, “is unrelated to a defendant in an earlier court
`
`proceeding, the Board has weighed this fact against exercising discretion to deny
`
`1 IPR2019-01393, Paper 24, (June 16, 2020) (informative).
`
`- 2 -
`
`
`
`
`
`institution.” IPR2020-00019, Paper 11, 13-14 (Mar. 20, 2020) (precedential).
`
`Indeed, citing Fintiv, the Board has held that a pre-FWD trial involving a
`
`defendant different than the petitioner did not favor discretionary denial under
`
`Factor 2 even though the petitioner had identified the defendant as a real party-in-
`
`interest. Dolby, 15-16.
`
`If considered at all, Apple’s trial does not favor discretionary denial given
`
`the uncertainty surrounding it. Although the district court denied Apple’s transfer
`
`motion, Apple’s mandamus petition is pending. In re Apple, 21-147 (Fed. Cir.).
`
`Should the petition be granted, Apple’s trial date becomes moot. Even if it is
`
`denied, assuming the trial will go forward as scheduled is still speculative.
`
`3.
`
`Factor 3: There Has Been Little Litigation Investment
`
`PO’s arguments with respect to the Bose Litigation in WDTX are moot, and
`
`there has been no investment in the pending declaratory judgment action in
`
`Massachusetts as PO has not yet answered the declaratory judgment complaint.
`
`The parties in the Apple Litigation have invested in the case but much work
`
`remains after the institution deadline herein. For example, dispositive motions are
`
`not due until four months after institution. Ex. 1082, 4; Dolby, 19 (instituting trial
`
`where dispositive motions were due three months after institution).
`
`As part of the Board’s “holistic analysis,” the investment by Apple and PO
`
`in their suit must also be considered in view of Bose’s diligence. Bose filed its
`
`- 3 -
`
`
`
`
`
`petition within a month of learning which claims PO was asserting. Pet., 93-94.
`
`Such diligence strongly mitigates against Apple’s and PO’s investment in their
`
`separate suit. Dolby, 20 (filing within five months of infringement contentions
`
`“mitigates against the investment of the parties” in multiple separate suits).
`
`4.
`
`Factor 4: Petitioner’s Stipulation Eliminates Overlap
`
`PO argues there is “complete overlap” between the issues before the Board
`
`and those presented in the Bose Litigation. POPR, 17. This argument fails.
`
`First, the Bose Litigation is no more. What (if any) invalidity contentions
`
`Bose will use in its DJ action in Massachusetts is pure speculation at this point as
`
`the only issue pending is non-infringement, which the Board does not address.
`
`Second, even if invalidity later becomes an issue in the DJ action, Bose has
`
`provided a stipulation (Ex. 2021) that eliminates “complete overlap” between the
`
`two forums. PO tries to minimize Bose’s stipulation by speculating Bose might re-
`
`classify references as primary or secondary. PO’s speculation is untrue.
`
`Regardless, a stipulation not to pursue the IPR grounds in district court favors
`
`institution (Sand Revolution II, 11-12), and Bose goes further, agreeing not to rely
`
`on the Petition’s primary references as primary references in any invalidity ground.
`
`Bose Corp. v. Koss Corp., IPR2021-00297, Paper 16, 16 (June 3, 2021) (finding
`
`Bose’s stipulation “mitigates any overlap to some degree”); Apple v. Koss Corp.,
`
`IPR2021-00381, Paper 15, 20-21 (July 2, 2021) (citing similar stipulations).
`
`- 4 -
`
`
`
`
`
`Finally, PO did not argue Factor 4 weighs against institution due to overlap
`
`with the Apple Litigation and cannot raise that new argument in its sur-reply.
`
`Regardless, the Board should not “preclude [Bose] from raising its challenges here
`
`based on the speculation that unrelated parties in litigation might later raise those
`
`same challenges.” Google v. Parus, IPR2020-00846, Paper 9, 20 (Oct. 21, 2020).
`
`5.
`
`Factor 6: Patent Owner’s Response to the Merits Is Weak
`
`PO says the Petition’s merits are “not strong,” yet barely discusses them.
`
`PPOR, 22. PO principally argues the Petition should be discretionarily denied
`
`under § 325(d) because one set of grounds combines a reference cited in an IDS
`
`during prosecution (Rezvani-875) with multiple references never cited before. Yet,
`
`the Office neither discussed nor applied Rezavani-875 (Pet., 96-97), and the Board
`
`has “consistently held that a reference that was neither applied against the claims
`
`nor discussed by the examiner, does not weigh in favor of exercising our discretion
`
`under § 325(d).” Bowtech v. MCP, IPR2019-00382, Paper 12, 12 (Aug. 6, 2019).
`
`Moreover, because the Petition otherwise meets the statutory threshold for
`
`institution and the Board has already instituted a trial on a related patent (IPR2021-
`
`00297) “it would be inefficient to discretionarily deny institution.” Apple v. Seven
`
`Networks, IPR2020-00235, Paper 10, 17 (July 28, 2020).
`
`Date:
`July 9, 2021
`
`
`Respectfully submitted,
`/Michael N. Rader/
`Michael N. Rader, Reg. No. 52,146, Counsel for Petitioner
`
`- 5 -
`
`
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
`I certify that on July 9, 2021, I will cause a copy of the foregoing document,
`
`including any exhibits filed therewith, to be served via electronic mail, as
`
`previously consented to by Patent Owner, upon the following:
`
`Mark G. Knedeisen
`Ragae M. Ghabrial
`Michelle Weaver
`
`
`
`
`
`
`
`
`
`
`
`mark.knedeisen@klgates.com
`ragae.ghabrial@klgates.com
`michelle.weaver@klgates.com
`
`/MacAulay Rush /
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
`
`
`
`
`
`
`Date: July 9, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
